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TAKEAWAY: The U.S. Supreme Court held that satisfying the “substantial portion” element of 35 U.S.C. § 271(f)(1) requires a quantitative, rather than qualitative, analysis. Under such an analysis, infringement under Section 271(f)(1) requires more than a single component of a multicomponent patented product be shipped abroad for assembly.

Section 271(f)(1) states that it is an act of infringement to supply abroad, from the United States, “all or a substantial portion of the components” of a patented invention. In doing so, 271(f)(1) serves as a counter against inducing the combination of components outside of the United States to avoid infringement liability.

In Life Technologies Corp. et al. v. Promega Corp. et al., the Supreme Court overturned the Federal Circuit’s 2014 ruling that Life Technologies Corp. was liable for infringing a Promega Corp. patent when Life Technologies supplied a single enzyme to a facility in the United Kingdom that made DNA test kits that allegedly infringed one or more of Promega’s patents. Promega and Life Technologies are competitors in the genetic testing marketplace. Promega owns the rights to a patent covering a kit used for genetic testing. The patented kit includes five components, including a polymerase enzyme. Promega licensed the patent to Life Technologies, but limited the license to a specific field of use. Life Technologies manufactured the polymerase enzyme in the United States and shipped the enzyme to the United Kingdom, where, ultimately, the other components were combined to form the final product, and sold worldwide. Promega subsequently sued Life Technologies under 35 U.S.C. § 271(f)(1) in order to capture potential damages of Life Technologies’ sales outside of the U.S. Promega’s position. The Federal Circuit found infringement and stated that the single component (the enzyme) was sufficiently important to the patented multicomponent invention (the kit) that it constituted “a substantial portion” of the components as defined under Section 271(f)(1) of the Patent Act.

The Supreme Court held that the shipping of the single component of the multicomponent patented invention did not constitute infringement. The Court took a quantitative, rather than qualitative, approach in deciding that the single component could not constitute a “substantial portion” triggering 35 U.S.C. § 271(f)(1) liability.